Appeal No. 97-1999
Application 07/390,745
prior art under 35 U.S.C.
§ 102(a).
We nevertheless reverse the examiner’s holding that
Claims 1-21 are unpatentable under 35 U.S.C. § 103 in view of
the combined teachings of Nadler, Marvizon, Ross, Robinson,
and Foster. In our view, persons having ordinary skill in the
art would not have been led by the combined teachings to
expect success in treating neuropsychopharmacological
disorders with pharmaceutical compositions comprising ACPC or
its esters. We find that the applied prior art would not have
enabled one skilled in the art to treat
neuropsychopharmacological disorders by injection of
pharmaceutically acceptable compositions of ACPC or its esters
with reasonable expectation of success without undue further
experimentation, i.e., at best the combined prior art
teachings create an “obvious-to-try” situation. See In re Eli
Lilly & Co., 902 F.2d 943, 945,
14 USPQ2d 1741, 1743 ((Fed. Cir. 1990):
An “obvious-to-try” situation exists when a general
disclosure may pique the scientist’s curiosity, such that
further investigation might be done as a result of the
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